International Questions

Why is it necessary to file patent and trademark applications in foreign countries?

A United States patent or trademark registration will protect the patent owner in the United States. If foreign patent or trademark protection is desired, in general, separate applications must be filed in each country of interest.

Are there any cases in which a single patent application can be made for multiple countries?

Yes. The Patent Cooperation Treaty or PCT provides the basis for filing an international application designating multiple countries. In addition, under the European Patent Convention, a single application may designate multiple countries.

Where should foreign patent and trademark applications be filed?

Foreign patent and trademark applications are most often filed in those countries in which articles incorporating the invention or bearing the trademark will be made or sold. In the majority of foreign countries, the first person to apply for a patent is entitled to a patent and the first person to register the trademark becomes the owner of the mark.

When should foreign patent and trademark applications be filed?

Under the Paris Convention, a United States applicant is granted a right of priority. The right of priority means that a corresponding foreign application, when filed within a specified period of time, will be regarded as if they had been filed on the same day as the United States application. In the case of utility patent applications, corresponding foreign applications for patents for invention must be filed within one year of the United States application filing date. In cases of United States design patent applications and trademark applications, corresponding foreign applications must be filed within six months of the United States application date.

What is a PCT patent application?

The Patent Cooperation Treaty or "PCT" establishes an international system which enables the filing of a single "international" application in one language with a single Patent Office (a so-called "Receiving Office") having effect in each of the member countries of the PCT which the applicant may designate. The Receiving Office conducts a formal examination of the international application, an international search and issues an international search report. The foregoing procedure is referred to as the "international phase" of the PCT procedure. After having received an international search report and, where appropriate, an international preliminary examination report, an applicant can decide to amend or withdraw the application and saving the expense which would have been associated with the filing of separate applications in each country of interest.If the applicant decides to continue with the procedure, national fees must be paid for each country designated in which the applicant desires to continue the application process and the applicant then enters the "national phase" of the PCT in such countries. At that time, in those countries where such is required, the applicant must then furnish translations and pay the national fees within 20 months (or 30 months) from the priority date. Once national processing starts, the normal national procedures generally apply.

What is a EPC patent application?

An EPC patent application is a single patent application which may designate as many of approximately nineteen contracting countries who are members of the European Patent Organization. It provides a way of filing and prosecuting a single patent application in one of the official languages of the European Patent Office (English, French or German). A European patent affords the same rights in the designated contracting countries as a national patent granted in any of those countries.

Are there any cases in which a single trademark application can be made for multiple countries?

Yes, in particular, the single European Community Trademark application may be used to obtain a trademark registration covering Austria, Benelux (Belgium, Netherlands and Luxembourg), Denmark, Finland, France, Germany, Greece, Ireland, Italy, Portugal, Spain, Sweden and the United Kingdom at a cost that is much lower than that of filing separate applications in each of those countries.

In addition, effective November 2, 2003, any natural person or legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, the United States or a country which has ratified the Madrid Protocol or a country which is a member of an organization which has ratified the Madrid Protocol, can file a single application designating up to 60 countries for trademark protection.

Is protection available for designs in foreign countries?

Yes. Various forms of protection are available for protecting designs in foreign countries. In addition, in Europe, a Community Design Registration makes it possible to obtain uniform design protection throughout the European Union via a single design registration. Limited unregistered design protection is also available.